WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mobil Oil Corporation v. John S. Flynn

Case No. D2000-1562

 

1. The Parties

Complainant is Mobil Oil Corporation ("Complainant" or "Mobil"), a corporation organized and existing under the laws of the State of New York, with a business address of 5959 Las Colinas Boulevard, Irving, Texas 75039-2298, USA.

Respondent is John S. Flynn ("Respondent" or "Flynn") an individual residing at 920 Silvermine Road, New Canaan, Connecticut 06840 USA.

 

2. The Domain Name and Registrar

The domain name at issue is < mobiltravelguide.com > (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

 

3. Procedural History

On November 10, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On November 13, 2000, the Center received hardcopy of the Complaint. On November 16, 2000 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On November 20, 2000 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Name is registered in the Respondent's name.

On November 22, 2000, the Center requested amendment of the Complaint. On December 5, 2000, the Center received an Amendment to the Complaint from Complainant via email. On December 7, 2000 the Center received the Amendment in hardcopy.

The Center verified that the Complaint with Amendment satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On December 13, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On January 1, 2001, the Center received the Response of Respondent via email. On January 4, 2001, the Center sent an Acknowledgment of Receipt of the Response.

The Center communicated with the Complainant and Respondent on January 8, 2001 and with Respondent on January 8, 2001 without response from the Respondent.

On January 12, 2001 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-member administrative panel consisting of the Sole Panelist.

 

4. Factual Background

Mobil owns the mark MOBIL TRAVEL GUIDE. Mobil commenced use of the MOBIL TRAVEL GUIDE mark at least as early as 1966. Since that time, Mobil has continuously used the MOBIL TRAVEL GUIDE mark in commerce in the United States and elsewhere in connection with annually published books containing quality ratings of lodgings and restaurants. These books include a unique one-to-five-star rating system for selecting restaurants, hotels, motels, inns and resorts. This rating system covers more than 3,000 towns in the United States and Canada. The eight regional guides contain information about more than 22,000 lodgings and restaurants, include historical information as well as opportunities for sightseeing, sports, recreation, cultural events and other attractions. More than 11,000 points of interest are described. Mobil owns two valid and subsisting United States registrations for the MOBIL TRAVEL GUIDE mark.

Respondent did not post this site until after the Complainantís counsel had advised him of Complainantís rights in the MOBIL TRAVEL GUIDE mark and contacted him numerous times to transfer the domain name.

On June 10, 1999, the Complainantís counsel advised the Respondent of the Complainantís trademark rights and requested that the domain name be transferred to the Complainant. The Respondent referred Complainantís counsel to his employer, Galt IT Solutions. The Complainantís counsel then contacted Mr. Alan Sheinwald, the Chief Executive Officer of Galt IT Solutions, concerning Mr. Flynnís registration of the Domain Name <mobiltravelguide.com>. Mr. Sheinwald indicated that Galt IT Solutions would transfer the Domain Name registration to Mobil, if Mobil would use the services of Galt IT Solutions to design Mobilís website. Mobil declined. Over the next few weeks, Complainantís counsel left several telephone messages for Mr. Sheinwald to discuss the matter, but those calls were not returned. On July 8, 1999, the Complainantís counsel wrote to Mr. Sheinwald, again requesting that the Domain Name be transferred to Mobil. When the Complainantís counsel called the Respondent on July 19, 1999, the Respondent acknowledged receipt of the June 10, 1999 letter and refused to transfer the Domain Name to Mobil. The Respondent indicated that he intended to transfer the Domain Name to a third party.

 

5. Partiesí Contentions

A. Complainant contends that it has registrations for the trademark MOBIL TRAVEL GUIDE. Complainant further contends that the Domain Name is identical with and confusingly similar to the MOBIL TRAVEL GUIDE mark pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent does not contest Complainantís assertion that it has registrations in the mark MOBIL TRAVEL GUIDE. Respondent does contest that the Domain Name is identical with and confusingly similar to the mark because of the existence of spaces between the words of the mark.

Respondent asserts that he has rights in the Domain Name because the website to which the Domain Name resolves contains content on the mobility-impaired travelers.

Respondent denies that he has registered and used the Domain Name in bad faith.

Respondent asserts that the WIPO lacks jurisdiction over him as a citizen of the United States.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."

Since both the Complainant and Respondent are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Identity or Confusing Similarity.

Complainant contends that it has registrations in the United States for the trademark MOBIL TRAVEL GUIDE. Complainant further contends that the Domain Name is identical with and confusingly similar to the MOBIL TRAVEL GUIDE mark pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested Complainantís assertion that it owns a registered trademark in MOBIL TRAVEL GUIDE in the United States. Therefore, the Sole Panelist finds that Complainant has a valid trademark in MOBIL TRAVEL GUIDE.

Respondent asserts that the Domain Name <mobiltravelguide.com> is not identical or confusingly similar because of the spaces between the words in the registered mark. Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß 23:50 (4th ed. 1998). Here, Respondent's <mobiltravelguide.com> Domain Name is confusingly similar to the MOBIL TRAVEL GUIDE mark because it incorporates the mark in its entirety. The presence of spaces between the words comprising Complainantís trademark constitutes non-distinctive matter. Prior decisions of WIPO panels are consistent with this result. See, Nike, Inc. v. Farrukh Zia, ICANN Case No. D2000-0167 (holding "enike.com" and "e-nike.com" to be confusingly similar to Complainant Nike, Inc.'s mark NIKE and its primary domain name NIKE.COM "[t]he only difference between the Domain Name and Complainant's mark is the 'e', a difference that the Panel holds in this case to be insignificant"); International Data Group, Inc. v. Maruyama & Co., Ltd., WIPO Case No. D2000-0420 (June 26, 2000) ("Since the Respondent's domain name differs from the Complainant's marks only by the addition of the now common 'E-', there is considerable likelihood of confusion of the Domain Name with the Complainant's business."); World Wrestling Federation Entertainment Inc (WWFE) v. Rooij, WIPO Case No. D2000-0290 (June 20, 2000) (transfer of domain name iwwf.com to holder of trademark WWF); Yahoo! Inc. v. Zviely, WIPO Case No. D2000-0273 (June 14, 2000) (transfer of various domain names, including "ayahoo.com" to holder of trademark YAHOO!); Teradyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026 (May 9, 2000) ("The addition of a hyphen to the registered mark is an insubstantial change.").

Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the MOBIL TRAVEL GUIDE mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Respondent has no relationship with or permission from Complainant for the use of the MOBIL TRAVEL GUIDE mark.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that it has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent alleges that he has negotiated discounts with national hotel chains, restaurants and travel suppliers that cater to the needs of the mobility-impaired traveler. Respondent does not counter Complainantís allegations that these services were rendered or any content was posted on the www.mobiletravelguide.com website only after notice from Complainant of this dispute. A "coming soon" message does not constitute content on a website.

The allegations of Respondent do not show that he was commonly known as "mobiltravelguide" nor that he engaged in anything but commercial activity.

The Sole Panelist finds that Respondentís allegations are insufficient to prove any of the criteria listed in the Policy, paragraphs 4(c)(i)-(iii). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.

Complainant has not specifically identified the subparagraph(s) in paragraph 4(b) upon which it relies in its assertion of bad faith. Respondentís commercial intention has been demonstrated. In addition, the Sole Panelist found the Domain Name to be confusingly similar to the MOBIL TRAVEL GUIDE mark. The activities of Respondent show his intent to attract internet users to his website. Therefore, the Sole Panelist finds that Complainant has proven the elements of paragraph 4(b)(iv).

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

One factor found to support a finding of bad faith is Respondentís knowledge of the Complainantís mark. Respondent registered the <mobiltravelguide.com> Domain Name on April 19,1999, long after Complainant registered the MOBIL TRAVEL GUIDE mark. Respondent had constructive notice of the MOBIL TRAVEL GUIDE mark, as a trademark search on the date of the registration of the Domain Name would have revealed Complainantís registration of the MOBIL TRAVEL GUIDE mark in the United States. Actual or constructive knowledge of the Complainantís rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000); Document Technologies v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000) (Respondentís knowledge of complainantís mark at the time of registration of the domain name suggests bad faith). The registration of the Domain Name with knowledge of the existence of the MOBIL TRAVEL GUIDE mark demonstrates intent to profit from the goodwill associated with the mark.

A second factor to support a finding of bad faith is that the Respondent has ignored Complainantís request to transfer the registration of the Domain Name. Failure to positively respond to a complainantís efforts to make contact provides "strong support for a determination of Ďbad faithí registration and use." Encyclopaedia Britannica v. Zucarini, D2000-0330 (WIPO June 7, 2000). Respondent has not only ignored Complainantís request, but has affirmatively threatened to transfer the Domain Name to a third party.

The evidence establishes: (i) Respondentís constructive knowledge of Complainantís mark and (ii) Respondentís threat to transfer the Domain Name to a third party.

Based upon this evidence, the Sole Panelist concludes that in addition to the nonexclusive criterion set forth in the Policy paragraph 4(b)(iv), the evidence supports a finding of Respondentís registration and use of the Domain Name in bad faith.

Therefore, based upon each of the foregoing grounds, the Sole Panelist finds that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

Additional Defenses.

Respondent has asserted the additional defense that the WIPO lacks jurisdiction over this dispute between an American corporation and an American citizen. Complainant has adequately pled jurisdiction in paragraph IV of the Complaint by referencing the registration agreement entered into by Respondent. Therefore, the Sole Panelist finds that the WIPO has jurisdiction over this dispute.

 

7. Decision

The Sole Panelist concludes (a) that the Domain Name <mobiltravelguide.com> is confusingly similar to Complainantís registrations of the trademark MOBILE TRAVEL GUIDE, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to Mobil Oil Corporation.

 


 

Richard W. Page
Sole Panelist

Dated: January 27, 2001